DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/1/26 has been entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-6, 8, 10, 15, 17 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Handschuh Wolfgang Ing. (AT 14226).
With regard to claim 1: Handschuh Wolfgang Ing. discloses an elongate roll-formed structural member comprising:
a pair of generally C-shaped channel elements (A) nested together, the pair of generally C-shaped channel elements (A) forming a body having a substantially rectangular cross-section profile (figs. 4-6), the body comprising:
first and second flanges (M) substantially parallel and spaced apart at a top and bottom of the body respectively (figs. 4-5), and
first and second web portions (N) separating the first and second flanges (M), the first and second web portions (N) being substantially parallel and spaced apart at sides respectively (figs. 4-6), and
wherein the first and second web portions (N) at one or both of the top and/or bottom of the body narrow (tapering at X), at the uppermost and/or lowermost ends of the body, towards each other and defines a recessed region (O) (figs. 4-6), and
wherein said elongated structural member further comprises one or more external elongate reinforcing elements (C) configured to be coupled onto the recessed region (O) of the elongate structural member (figs. 4-5).
The elongated structural member being “roll-formed” is considered a product by process limitation.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
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Fig. 4: Handschuh Wolfgang Ing. (AT 14226)
With regard to claim 2: Handschuh Wolfgang Ing. discloses one of the first and second flanges (M) is adjacent the recessed region (O) and has a flange width less than a width of a space between the first and second web portions (N) (fig. 4).
With regard to claim 3: Handschuh Wolfgang Ing. discloses that the flange (M) adjacent the recessed region (O) has a flange width at least less than a widest space between the first and second web portions (N) (fig. 4).
With regard to claim 5: Handschuh Wolfgang Ing. discloses that the one or more external elongate reinforcing elements (C) coupled onto the recessed region (O) results in a box-section in which the one or more external elongate reinforcing elements (C) lie within a general rectangular profile or envelope (fig. 4).
With regard to claim 6: Handschuh Wolfgang Ing. discloses that the recessed region (O) comprises a recess width (extending between the first and second web portions N) (fig. 3):
a) between 1 and 5 times a wall thickness of each of the one or more external elongate external reinforcing elements (C) (figs. 4 and 6), or
b) between 1 and 3 times the wall thickness of each of the one or more external elongate external reinforcing elements (C) (figs. 4 and 6).
With regard to claim 8: Handschuh Wolfgang Ing. discloses that the one or more external elongate reinforcing elements (C) coupled to the recessed region (O) form a wall thickness:
between 2 and 6 times a wall thickness of the web portions (N) without reinforcement (figs. 4 and 6).
With regard to claim 10: Handschuh Wolfgang Ing. discloses that fasteners (J2) to couple the one or more external elongate reinforcing elements (C) onto the body, the fasteners being one of screws rivets, and bolts (abstract; pg. 1, last 2 lines and pg. 2, lines 14-16 of translation).
With regard to claim 15: Handschuh Wolfgang Ing. discloses that the one or more external elongate reinforcing elements (C) extends a partial length along the elongate member.
With regard to claim 17: Handschuh Wolfgang Ing. discloses that at least one external elongate reinforcing element (C) of the one or more external elongate reinforcing elements (C) is coupled to both the first and second flanges (M) (figs. 4-6).
With regard to claim 19: Handschuh Wolfgang Ing. discloses that the first and second web portions (N) have indentations in a mid-region extending longitudinally along the elongate structural member to improve structural performance of the elongate structural member (figs. 4-6).
With regard to claim 20: Handschuh Wolfgang Ing. discloses that a cross-section of the body including the recessed region (O) extends along at least a significant portion of the length of the elongate member (figs. 4 and 13).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 21-22 and 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Handschuh Wolfgang Ing. (AT 14226) in view of Hayward (GB 2 288 417 B).
With regard to claim 21: Handschuh Wolfgang Ing. discloses a method of forming an elongate structural member (figs. 4-6) comprising:
providing metal sheets (figs. 4-6; abstract; claim 5),
forming a pair of generally C-shaped channel elements (A) (figs. 4-6),
nesting the pair of generally C-shaped channel elements (A) together to form a body having a substantially rectangular cross-section profile (figs. 4-6), the body comprising:
first and second flanges (M) substantially parallel and spaced apart at top and bottom of the body respectively (figs. 4-6), and
first and second web portions (N) separating the first and second flanges (M), the first and second web portions (N) being substantially parallel and spaced apart at respective sides (fig. 4), and
forming a recessed region (O) where the first and second web portions (N) at one or both of the top and/or bottom of the body (tapering at X), at the uppermost and/or lowermost ends of the body, towards each other (fig. 4), and
fitting one or more external elongate reinforcing elements (C) with a predetermined length onto the recessed region (O) (fig. 4).
Handschuh Wolfgang Ing. does not disclose an elongate structural member is rolled-formed, wherein the forming the metal sheets comprising bending the metal sheets with rollers and bending the metal sheets to form the recessed region.
However, Hayward discloses method of forming an elongate roll-formed structural member (figs. 1-2) comprising: providing metal sheets (fig. 2; pg. 8, lines 11-15), bending the metal sheets with rollers to form a pair of generally C-shaped channel elements (1) (figs. 1-2; ; pg. 8, lines 11-15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Handschuh Wolfgang Ing. to have the elongate structural member being rolled-formed, wherein the forming of the metal sheets comprises bending the metal sheets with rollers such as taught by Hayward in order to provide increased strength compared to heat forming. Handschuh Wolfgang Ing. as modified by Hayward would result in bending the metal sheets to form the recessed region.
With regard to claim 22: Handschuh Wolfgang Ing. discloses providing fasteners to couple each external elongate reinforcing element (C) onto the recessed region (O) (fig. 4).
With regard to claim 24: Handschuh Wolfgang Ing. discloses that the predetermined length (length of the web) of the one or more external elongate external reinforcing elements (C) is less than the length (length of the web) of the body of the elongate structural member to reinforce part of the elongate structural member (fig. 4) .
With regard to claim 25: Handschuh Wolfgang Ing. discloses forming indentations extending longitudinally in a mid-region along the elongate roll-formed structural member capable of improving structural performance of the elongate roll-formed structural member (figs. 4-6).
With regard to claim 26: Handschuh Wolfgang Ing. discloses a cross-section of the body including the recessed region (O) extends along at least a portion of the length of the elongate member (fig. 4-6).
Allowable Subject Matter
Claims 11, 16 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The combination of all the elements of the claimed elongate roll-formed structural member including all the limitations of the base claim and any intervening claims is not adequately taught or suggested in the cited prior art of record.
Response to Arguments
The objection of claims 1-6, 8, 10-11, 15-20, 22 and 24-25 has been withdrawn in view of the amendment filed 4/1/26.
The rejection of claims 11 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of the amendment filed 4/1/26.
Applicant's arguments filed 4/1/26 have been fully considered but they are not persuasive.
Applicant argues that claims 1 and 21 require the nested box section to have "recessed regions" on both sides of the top and/or, both sides of the bottom of the box section, and for these recessed regions to narrow towards each other. Applicant submits that this is required in the context of the present invention for the claimed "external reinforcing elements" to couple with the "recessed regions", i.e. on both sides.
Examiner respectfully submits that the claims do not reference “sides” as argued. As presented, the phrase “one or both” appears to be referring to the top and/bottom of the body. If applicant is intending to refer to sides, the claims should be amended to clearly reflect that. Should applicant amend the claims further, Examiner suggests using “opposing sides” instead of “both sides” as the web portions are not limited to two sides.
Applicant further argues that Handschuh Wolfgang Ing. does not disclose the invention as claimed as the portion marked 'O' by the Examiner only exists on one side at the top and/or bottom, and there is no corresponding portion on the other side configured to narrow towards each other.
Examiner respectfully submits that the broadest interpretation of the argued subject matter requires the first and second web portions to have only one or both of the top and/or bottom of the body narrow towards each other (emphasis added). Nonetheless, Handschuh Wolfgang Ing. discloses that the first and second web portions (N) at one or both of the top and/or bottom of the body narrow (tapering at X), at the uppermost and/or lowermost ends of the body, towards each other and defines a recessed region (O) (figs. 4-6).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSIE T FONSECA whose telephone number is (571)272-7195. The examiner can normally be reached 7:00am - 3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSIE T FONSECA/Primary Examiner, Art Unit 3633
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